*Reginald Smallwood
Imagine that you are Native American and you are invited to a Washington Redskins (Redskins) game. Or you are Asian and you are invited to the concert of an Asian-American band called “The Slants.” Now imagine that you are in the mall and see a mannequin in the Urban Outfitters’ window wearing a t-shirt that says “FUCT.” Is any one of these phrases more offensive than the others? Should these word marks be registrable and protected by the United States Patent and Trademark Office (USPTO)? In Tam, the United States Supreme Court held that the USPTO could not deny registration to disparaging trademarks. Matal v. Tam, 582 U.S. ___, 137 S. Ct. 1744, 1747 (2017). Now, the Court has the opportunity to determine if the USPTO can deny registration to scandalous and immoral trademarks. See In re Brunetti, 877 F.3d 1330, 1335 (Fed. Cir. 2017).
I. Introduction to Trademarks
Trademarks are distinctive symbols that identify and distinguish the source of the goods or services[1] of one party from those of others. Trademark, Patent, or Copyright?, U.S. Patent & Trademark Office (June 9, 2016, 1:41 PM), https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright. These marks include words, phrases, designs, or symbols. Id. Trademarks are most often used as a company’s slogan, brand name, or logo. Id.
Trademark law was traditionally regulated by common law amongst the states. Tam, 137 S. Ct. at 1751. In 1946, Congress passed the Lanham Act, which is the foundation of federal trademark law. Id. at 1752. The USPTO grants and denies federal trademark registration. See id. at 1753. Trademarks that are not registered with the USPTO can still receive protections under the Lanham Act and state common law. Id. at 1752–53. However, federal registration is particularly advantageous because it gives the public notice of the registrant’s claim of ownership of the mark, establishes a nationwide legal presumption of ownership, and grants the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. U.S. Patent & Trademark Office, supra.
II. History of Disparaging Trademark Registration
The Lanham Act contains several provisions that bar federal trademark registration. In particular, one provision states:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .
15 U.S.C. § 1052 (emphasis added).
Until recently, the USPTO upheld this provision and denied federal registration to marks it deemed disparaging, scandalous, or immoral. See Tam, 137 S. Ct. at 1747; see Pro-Football, Inc. v. Harjo, 415 F.3d 44, 46 (D.C. Cir. 2005); see Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 447 (E.D. Va. 2015). Notably, in Harjo, a group of Native Americans petitioned to cancel the Redskins’ registrations based on the disparagement clause. Harjo, 415 F.3d at 46. The Trademark Trial and Appeal Board (TTAB) granted the petition, but on appeal the decision was reversed because the claim was barred by laches. Id. However, the USPTO continuously denied subsequent Redskins trademark registrations. Theresa Vargas, From Pork Rinds to Cheerleaders, the Trademark Office Rejects the Word ‘Redskins,’ Wash. Post: Post Local (Jan. 28, 2014), https://www.washingtonpost.com/blogs/local/wp/2014/01/28/from-pork-rinds-to-cheerleaders-the-trademark-office-rejects-the-word-redskins/?utm_term=.9c31db8c9bd2. Blackhorse was another attempt to cancel the Redskins’ registrations, but Tam mooted this issue. Blackhorse, 112 F. Supp. 3d at 447. See Tam, 137 S. Ct. at 1747.
In Tam, an Asian American band appealed the USPTO’s denial of its registration for the band name “The Slants.” Tam, 137 S. Ct. at 1747. USPTO determined the name was disparaging to Asian people because “slant” referenced the derogatory stereotype of Asian people’s eyes. See id. Tam argued, as an Asian-American, the group’s name was a way of reclaiming the word and taking ownership of Asian stereotypes. Id. The Court unanimously struck down the disparagement clause as viewpoint discrimination in violation of the First Amendment’s free speech clause, allowing Tam’s band to register the trademark. Id.
III. Post-Tam Scandalous & Immoral Trademark Registration
Shortly after Tam, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) had the opportunity to determine whether the USPTO could deny registration on the basis of a mark being scandalous or immoral. See Brunetti, 877 F.3d at 1335. In 1990, Brunetti founded a clothing company named “FUCT,” which sells clothing in stores such as Urban Outfitters. Id. at 1337, 1339. In 2011, Brunetti sought to register “FUCT” with the USPTO. Id. at 1337. The USPTO denied Brunetti’s registration on the basis that the mark is the past tense of a vulgar word, which violates 15 U.S.C. § 1052(a). Id. The TTAB affirmed the USPTO’s decision. Id. at 1335.
The Federal Circuit reversed the TTAB’s decision and held the USPTO’s ban on scandalous and immoral trademarks as unconstitutional because it violated the First Amendment. Id. The Federal Circuit did not hold Brunetti’s denial as viewpoint discrimination, despite heavily relying upon Tam. Id. at 1341. Instead, the Court held “[i]ndependent of whether the immoral or scandalous provision is viewpoint discriminatory, we conclude the provision impermissibly discriminates based on content[.]” Id. The USPTO petitioned the Supreme Court to reinstate the federal ban in September 2018. Iancu v. Brunetti, SCOTUSblog, http://www.scotusblog.com/case-files/cases/iancu-v-brunetti/ (last visited Jan. 17, 2019). On January 4, 2019, the Supreme Court granted certiorari. Id.
IV. The Potential Future of Scandalous & Immoral Trademarks
The USPTO’s ban on scandalous and immoral trademarks will likely come to an end. Although the Supreme Court has granted certiorari, the Court will likely affirm the Federal Circuit, holding the ban on scandalous and immoral trademarks as unconstitutional. The Federal Circuit’s opinion on Brunetti was decided a little over a year after the Tam decision, with which the Federal Circuit’s decision is aligned. Furthermore, the courts similarly agree the government cannot prohibit registrations solely because they are offensive or distasteful. Compare Tam at 1763 (stating “We have said time and again that ‘the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers’”) (citations omitted) with Brunetti at 1357 (stating “[t]here are words and images that we do not wish to be confronted with, not as art, nor in the marketplace [but] the First Amendment protects . . . private expression which is offensive . . .”).
By granting certiorari, the Court may want to determine whether trademarks are commercial speech, and if so, which scrutiny test applies. Also, the Court may hold that a disparaging mark is not analogous to a scandalous or immoral mark; thus the reasoning and holding in Tam should not apply to the decision in Brunetti. In addition, the Court may want to address whether Brunetti’s denial is viewpoint discrimination or mere content-based discrimination.
V. Conclusion
The USPTO will likely have to begin granting registration to–otherwise qualified– scandalous and immoral trademarks. A disparaging mark and a scandalous mark are undoubtedly similar. In fact, it would seem illogical to protect disparaging marks, but not scandalous and immoral marks. The Supreme Court will likely affirm the Federal Circuit’s decision because the Federal Circuit correctly relied on the Tam holding, which means the federal ban on scandalous and immoral trademarks will soon end.
* Reginald Smallwood is a second-year student at the University of Baltimore School of Law, where he is a staff editor for the University of Baltimore Law Review and a Scholar for the Fannie Angelos Program for Academic Excellence. During fall 2018, he interned for the Hon. George L. Russell, III in the U.S. District Court for the District of Maryland. During summer 2018, Reginald was a summer associate at Gallagher, Evelius, & Jones. During summer 2019, Reginald will serve as a summer associate at Miles & Stockbridge.
[1] Trademarks identify goods, while service marks identify services; however, the term “trademark” is often used to refer to both trademarks and service marks. Trademark, Patent, or Copyright?, U.S. Patent & Trademark Office, (June 9, 2016, 1:41 PM), https://www.uspto.gov/trademarks-getting-started/trademark-basics/trademark-patent-or-copyright/.
University of Baltimore Law Review 